Bilski v. Kappos: Supreme Court Arguments

The transcript from the hour-long oral arguments are available online here. The following is the five-minute version of the questions and statements that I found most interesting. They are a bit out-of-order.

JUSTICE SCALIA: Well, if the government says that the — that the term on which it hangs its hat is the term useful arts and that that meant, originally, and still means manufacturing arts, arts dealing with workmen, with — you know, inventors, like Lorenzo Jones, not — not somebody who writes a book on how to win friends and influence people. What is wrong with [the] analysis, that …”useful arts” … always was thought to deal with machines and inventions?

JUSTICE BREYER: You know, I have a great, wonderful, really original method of teaching antitrust law, and it kept 80 percent of the students awake. … And I could probably have reduced it to a set of steps and other teachers could have followed it. That you are going to say is patentable, too?

JUSTICE SCALIA: . . . Let’s take training horses. Don’t you think that — that some people, horse whisperers or others, had some, you know, some insights into the best way to train horses? And that should have been patentable on your theory.

JUSTICE SOTOMAYOR: So how do we limit it to something that is reasonable? Meaning, if we don’t limit it to inventions or to technology, as some amici have, or to some tie or tether, borrowing the Solicitor General’s phraseology, to the sciences, to the useful arts, then why not patent the method of speed dating?

JUSTICE SOTOMAYOR: But a patent limits the free flow of information. It requires licensing fees and other steps, legal steps. So you can’t argue that your definition is improving the free flow of information.

MR. JAKES: . . . I think that we should go back to the first principles that were enunciated in Diehr and other cases, that abstract ideas per se are not patentable. That’s my position, and what I would advocate in this case and any case…

MR. STEWART: Well, I think the Court could say — could do essentially what was done in Benson and Flook, namely acknowledge that there had never been a case up to this point in which a process had been held patent eligible that didn’t involve a machine or a transformation. It could leave open the possibility that some new and as yet unforeseen technology could necessitate the creation of an exception.

MR. JAKES: [L]ooking at what are useful arts, it does exclude some things. It does exclude the fine arts. Speaking, literature, poems, I think we all agree that those are not included, and there are other things as well. For example, a corporation, a human being, these are things that are not covered by the statutory categories. . . . Now, the patent on the data, that’s another category that’s not included in the subject matter of those four categories. The data itself is not patentable, but if it is a series of steps, it should be eligible as long as it meets the other statutory requirements as a process.

CHIEF JUSTICE ROBERTS: Well, but your Claim 1 it seems to me is classic commodity hedging that has been going on for centuries.

MR. JAKES: Your Honor, if that were true, then we should run afoul of the obviousness provision under section 103.

JUSTICE BREYER: There are actually four things in the patent law which everyone accepts. There are two that are plus and two that are minus. And the two that are plus is by giving people a monopoly, you get them to produce more. As you said, you get them to disclose. The two minuses are they charge a higher price, so people use the product less; and moreover, the act of getting permissions and having to get permission can really slow things down and destroy advance. So there is a balance. In the nineteenth century, they made it one way with respect to machines. Now you’re telling us: Make it today in respect to information. And if you ask me as a person how to make that balance in respect to information, if I am honest, I have to tell you: I don’t know. And I don’t know whether across the board or in this area or that area patent protection will do no harm or more harm than good.

MR. STEWART: And you know, Justice Scalia, you mentioned how to win friends and influence people. I think at a certain level of generality you could describe both Dale Carnegie and Alexander Graham Bell as people who devised methods of communicating more effectively. The reason that Bell’s method was patentable was that it operated in the realm of the physical. Bell had devised a process implemented through machines by which sound was transformed into electronic current. The current was then transmitted over a distance and transformed back into sound. Innovations as to new techniques of public speaking, new techniques of negotiations, techniques that go to the substance of what is said may be innovative. They may be valuable. They are not patent eligible because they don’t deal in the realm of the physical —

JUSTICE SOTOMAYOR: How about if we say something as simple as patent law doesn’t cover business matters

MR. STEWART: I think that would be incorrect, and it would create problems of its own. . . . So to say that business methods were ruled out would itself be a fairly sweeping holding.

JUSTICE SCALIA: Also you could say business methods apart from machines are not patentable. How about that?

MR. STEWART: If the Court said that in the limited area of business methods, if there is no machine or transformation there is no patent eligibility —

CHIEF JUSTICE ROBERTS: Mr. Stewart, I thought I understood your argument up until the very last footnote in your brief. And you say this is not –simply the method isn’t patentable because it doesn’t involve a machine. But then you say but it might be if you use a computer to identify the parties that you are setting a price between and if you used a microprocessor to calculate the price. That’s like saying if you use a typewriter to type out the — the process then it is patentable. . . . that takes away everything that you spent 53 pages establishing. . . . [I]f you look at your footnote, that involves the most tangential and insignificant use of a machine. And yet you say that might be enough to take something from patentability to not patentable.

MR. STEWART: And all we’ve said is that it might be enough; that is, hard questions will arise down the road as to where do you draw the line, to what extent must the machine or the transformation be central —

CHIEF JUSTICE ROBERTS: So you think it’s a hard question. If you develop a process that says look to the historical averages of oil consumption over a certain period and divide it by 2, that process would not be patentable. But if you say use a calculator, then it — then it is?

MR. STEWART: I think if it’s simply using a calculator for its preexisting functionality to crunch numbers, very likely that would not be enough. But what we see in some analogous areas is that the computer will be programmed with new software, it will be given functionality it didn’t have before in order to allow it to perform a series of calculations, and that gets closer to the line. . . . I guess the point I’m trying to make is simply that we don’t want the Court, for instance, in the area of software innovations or medical diagnostic techniques to be trying to use this case as the vehicle for identifying the circumstances in which innovations of that sort would and would not be patent eligible, because the case really doesn’t present any — any question regarding those technologies.

JUSTICE KENNEDY: How would you come out in the State Street case today, if all of the arguments were made under your test?

MR. STEWART: Well, under our test, we would come out the same way because the computer would be a machine. The only question would be whether the programming of the computer with new software caused it to be a patentable different machine from the one that existed previously.

JUSTICE STEVENS: It’s not on a computer, which the only difference from the old computer is it’s using a new program. You can’t say that’s a new machine.

MR. STEWART: [The] PTO agrees … that programming a computer by means of software to produce — to perform new functions can create a novel —

JUSTICE BREYER: But then all we do is every example that I just gave, that I thought were examples that certainly would not be patented, you simply patent them. All you do is just have a set of instructions for saying how to set a computer to do it. Anyone can do that. Now, it’s a machine.

MR. STEWART: … we recognize that there are difficult problems out there in terms of patentability of software innovations and medical diagnostics.

JUSTICE KENNEDY: You thought we — you thought we would mess it up.

MR. STEWART: We didn’t think the Court would mess it up. We thought that this case would provide an unsuitable vehicle for resolving the hard questions because the case doesn’t involve computer software or medical diagnostic techniques, and therefore, we thought the Court would arrive at the position that I think, at least some members are feeling that you have arrived at, that you will decide this case, and most of the hard questions remain unresolved.

“It seems to me relatively simple to distinguish between a disc carrying a new song (unpatentable) from a disc carrying software that makes (say) images on monitor screens sharper (patentable). ”

The real problem in the EU comes in stuff like data encryption, where the patent is strictly on manipulation of bits — pure software, and software as such, and mathematics, by any mathematician’s or computer scientist’s assessment. Data compression, unless it is designed with an error-correction which is especially resistant to electromagnetic interference or something, is much the same.

“Justice Breyer: If a US grade school teacher developed an innovative method to teaching 7th graders math (e.g., a specific, novel, innovative lesson plan) so 80% more student could do simple multiplication before entering high school, shouldn’t the teacher be able to obtain a patent assuming novel & nonobvious? Again, novel & nonobvious so doesn’t impact what teachers have done for centuries, they can keep on doing and even design around (easier with the doctrine of equivalence trimmed). However, for a limited time, they’d need a license from The Teacher to use the invention. Ok, education is not a good example but lord knows we need innovation there.”

Bleck. You actually think that allowing people to demand royalties for teaching methods could *improve* education? Wow. This is unbelievably uninformed economically. Teachers have a hard enough time without a bunch of warnings from the administration: “The following teaching methods are patented and we don’t have the budget for them, so don’t use them!”

btw Does anybody know why Morse patent 1647 was reissued three times? I agree with comments above, that claims 5 and 6 of reissue 117 should never have issued – they are copyrightable, not patentable, expressions. The rest of the reissued claims seem solid though.

The EBA? Tks for reminding me Trilithon. Readers, Ned, the EPO has a “tie breaker” mechanism called the Enlarged Board of Appeal. But it’s not like SCOTUS. On it sit the biggest cheeses from those 21 Technical Boards of Appeal I wrote about. With their EBA hats on, they impose order on themselves (and incidentally on all those Supreme Courts out there, in the 36 Member States of the European Patent Convention). Neat, eh?

MaxDrei, you raise a fundamentally sound point about the 21 Technical Boards of Appeal and the lack of one superior court. In the US, before the Fed. Cir., we had about a dozen regional circuit courts that heard patent cases. They were free to disagree with each other, and they often did. The Supreme Court took patent cases typically only when an issue had been fully developed by the lower courts and then only when they disagreed with each other.

With the creation of the Federal Circuit, however, the smooth development of patent law ended. Federal Circuit panels decisions were binding precedent on later panel decisions, and practically the only way earlier panel decision could be overruled is if the issue were taken en banc.

While the system does provide national uniformity in patent law, it does not allow the robust debate that takes place when sundry Courts of Appeal can disagree with each other.

I have often thought, and sometimes argued, that the Federal Circuit would be better off if panel decisions were not binding on future panels, and that the Federal Circuit itself should take cases en banc when there was a conflict among panels. This actually happens to some degree, but it is not officially sanctioned.

Ned Heller asked me at 7.06am on November 11 how the European patentability standard “technical” can be any more sharp than “useful arts”. Trilithon repluied at 12.46pm.

I want to add one point. It is one I have made before but it is apt. Assiduous readers will forgive me, I am sure.

Europe doesn’t do Binding Precedent. So, instead of a SCOTUS ruling once every 30 years, it has >1000 EPO Technical Board of Appeal decisions each year, which sharpen and refine what “technical” means. With each year that goes by, therefore, “technical” gets more clear (and up to date) in meaning.

It is bizarre, I know, but those 21 Technical Boards of Appeal at the EPO are the ultimate authority on what’s patentable in Europe. No court can tell them what to decide. They are the end of the line.

Red Monkey posted, “Here is an example of a process claim drawn to what most people would regard as an abstraction (from either 10/035,947 or 10/073,093). 1. The process of combining God’s gift of reincarnation with love resulting in immortality.”

Two questions. Since these are published apps, why aren’t the file histories available in PAIR? And, did you notice these were NOT FILED PRO-SE?

The Court seems to suggest that an invention be tied to “technology” in order to be patent eligible. Wouldn’t this be similar to the PTO’s technological arts test, which the Federal Circuit said in Bilski is not a test at all, but rather gives the issue a different name?

Mostly what this case has pointed out is how ignorant the S Ct has become of basic patent law, now that the CAFC has effectively countermanded all the substantive rulings in this area. Their lack of understanding of the purpose of the different sections (101, 103, etc.) was appalling. Their questions confirm beyond any reasonable doubt that we can expect a completely random and unhelpful decision.

Ned: Mooney, outside of patent law, just how is a computed price quote abstract? Just how is minimizing risk or balancing a boat abstract?

I never said that balancing a boat was abstract, Ned.

how is a computed price quote abstract

A computed price quote is abstract because it’s a number. Are numbers patentable? No. Is a process for generating a number patentable? It shouldn’t be. If the process requires a novel machine, then patent the novel machine. Please note that the novel machine is not a re-programmed computer.

Trilothon, thanks for the explanation. Well done. I think the funny hypos presented by the SCt Justices reflected their general concern with how to both eliminate “processes” that they think should clearly not be patentable without at the same time excluding things that history says were and should be patentable.

I predict that cert will be dismissed as improvidently granted. This case is way too easy and it does not involve the harder issues involving general purpose computers and medical diagnostics. If cert is not dismissed, I hope they write an opinion that neither affirms or rejects the CAFC’s reasoning. However, we all know that the CAFC will interpret it regardless as a vindication of the entire opinion, a la the CAFC’s treatment of Markman as endorsing their view that claim construction is an issue of law reviewed de novo (something the Supremes in Markman did not hold and did not address — if anything, their opinion reads against it).

Well, the Bilski opinion talked quite a lot about how technology and the useful arts were basically the same thing, which begs the question: what is technology? Leaving that to one side, the EPO use of “technical” as a touchstone doesn’t even derive from the primary statute (EPC), but arises from a preconceived notion that patents are for “physical” things, or advances in the “technical arts”, underpinned by a throwaway in the Implementing Regulations for the EPC that claims shall define inventions in terms of their “technical features”. This has been conflated with the statutory exclusions of computer programs, business methods etc. (“as such”).

One thing is plain, if you reject Bilski as 101-ineligible but would allow merely-computerised-Bilski, then you are exalting form over substance. If you reject both Bilski as-is AND merely-computerised-Bilski as 101-ineligible – on the basis that there is no meaningful difference between the two – then you need a reason that is supported by the statute, and that reason must be based on construing “process” to be limited in some way, which brings us back to the useful arts.

If State Street is to stand, without exalting form over substance, I don’t see how Bilski as-is can be rejected on 101. “Abstract” isn’t enough – these things clearly aren’t abstract on any sensible interpretation of the word.

As noted upthread, the EPO treats claims with any technical content as non-excluded, so merely-computerised-Bilski would pass that hurdle. It would, however, be rejected as non-inventive, because the only other features are non-technical and would be excluded from consideration, leaving only a general purpose computer.

The EPO grants patents for computer-implemented inventions (CIIs) – in which the only difference from the prior art lies in “software” – all the time, but only if the improvement over the prior art makes a technical contribution (solves a technical problem). So non-obvious software-based improvements in the technical operations of computing equipment – communications protocols, data-encryption, data-compression, operating systems and user interfaces – are all regarded as technical and patentable – call these “operational CIIs”. Non-obvious improvements in computer applications for “technical purposes” – process control, technical design and analysis, etc. – are also patentable. Call these “technical application CIIs”.

Something that causes a computer to be a technically improved tool for doing a non-technical job can be patentable, being a type of “operational CII”. But a CII where the only novelty lies in non-technical functionality – i.e. most “novel” user-oriented applications or systems, including financial, business, social, “office” etc. – while “eligible” can never be “inventive” and are therefore unpatentable. Call these “non-technical CIIs”.

If a CII is patentable at all in Europe, you can claim a method, programmed machine AND a computer program product (without a data carrier).

It seems to me that if SCOTUS wants to exclude Bilski and merely-computerised-Bilski, they’re gonna need a useful arts = technical standard, or something like it – but can they do that without throwing out State Street?

You ask “Mooney, outside of patent law, just how is a computed price quote abstract? Just how is minimizing risk or balancing a boat abstract?
Abstractions are disembodied ideas that have no concrete examples or results.”

Malcolm has already provided his premise that merely having a concrete example or result does not lift the item above an abstraction. He has implied that doing so would be an incorrect reading of Diehr, and that Diehrbots incorrectly (unlawfully?) hold this “ridiculous” position.

MaxDrei, on the suggestion to look to Europe and adopt “technical,” that seems as amorphous as “useful Arts,” which is the term used in our constitution and which now, it seems for the first time in our history, might actually have to be analyzed by the Supreme Court. What did the framers mean by the term.

As for what the Supremes were doing during orals, it’s hard to tell. They heard a criminal execution case in the morning. Maybe they simply needed to break the tension and they were doing it by joking around during the patent orals?

Yes, you are right. There is absolutely no computer, no software in Bilski’s claims. There is the mental step of identifying counterpart risk parties and then there is the post-solution steps of initiating transactions.

Diamond v, Diehr was basically the same thing: use the Arhenius equation and then engage in real world post solution activity by opening the rubber curing mold at the calculated moment. Jakes mentioned Diamond v, Diehr during the orals.

Amazing how the oral argument included hypotheticals of whether programing a general purpose computer provides 101 subject matter, yet the claims before the court involve no computer implementation at all…is the court trying to decide the issues before it, or something entirely different?

Mooney, outside of patent law, just how is a computed price quote abstract? Just how is minimizing risk or balancing a boat abstract?
Abstractions are disembodied ideas that have no concrete examples or results. But all of the above do have real and specific consequences.

Claims are not pointing vectors and thus they are not “directed” at stuff.

(I know. I know. The judges use that kind of nonsense language. But they are judges. They can talk nonsense. We shouldn’t.)

That said, I think you are on to something.

Test: Does the method claim taken as a whole preempt the free flow and communication of the abstract ideas behind the invention (or “free flow of information” about the invention as Sotomayor phrased it)? If not, it is not precluded by 101.

The fact is, if free flow of information were the test, then all kinds of patents to communication coding methods (TDMA, FDMA, CDMA anyone?), compression methods or the like would never be granted because they are not machines and they restrict the “free flow of information.”

There is no “free flow of information test” for patentability that I’m aware of. Certainly Justice Sotomayor never proposed one. But denying patents on codes and compression algorithms is a great idea, regardless.

Wise Latina woman indeed…

Congrats, you just won a date with Glenn Beck! He’ll pick you up after the KKK meeting. What color sheet will you be wearing?

And frankly speaking, I am not aware of Sotomayor’s rather inventive “free flow of information” test. I wonder if the Google reprepsentatives have been taking her to dinner…

The fact is, if free flow of information were the test, then all kinds of patents to communication coding methods (TDMA, FDMA, CDMA anyone?), compression methods or the like would never be granted because they are not machines and they restrict the “free flow of information.”

Malcolm posts crap to this abstract mathematical non-existent forum using only abstract non-existent algorithms transported by abstract non-existent routing algorithms, all of which were found in the crappy library of ancient Alexandria or were known and obvious before they ever existed and which can be written up in a statute-satisfying specification in minutes again using non-existing abstract algorithms and perhaps telepathy, all while quaffing some patented real concrete non-abstract snakeoil that took years of toil in the labratory and billions of dollars in investment. If he happens to use a crappy machine to do any of these things, he does it with the machine turned off because the machine is no different when turned off as when crappily it is turned on.

“Well without the full spec in front of us we can never be sure what went on Ned. I might offer some conjecture later, or I might divine the proper interpretation from that big jumble of mess, but it seems unlikely. ”

2) Is it directed to a machine, article of manufacture, process or composition of matter.

In deciding the first issue, subject matter made by man and that is useful to produce a concrete OR tangible result should be presumed within the Useful Arts. Laws of Nature and natural phenomena, not made by man, can be claimed as components of useful applications.

2. If the Patent Office gets inventors to divulge the details of their invention before a patent is issued, then there is no longer a reason for the Patent Office to issue the patent.

3. The Patent Office only has to issue enough patents to con inventors into applying for patents. It’s the reason slot machines make so much noise when they pay out. Most of the Players lose and the House always wins.

With respect to Mr. Murdoch, I believe he is doing more to disseminate the free flow of information than any many in history. What he proposes will limite the propagana effect of corporate news that has controlled the masses for decades.

Well, it will limit the propaganda effect of “news” disseminated by Rupert Murdoch, that is for sure. Not sure I follow the gist of whatever else you’re driving at.

CPastel So, if you patent a method of training horses that 20,000 people are going to use, how do you sue all of them for infringement? Especially since everyone can read the details of the method in the published patent.

I’m not sure what the latter statement has to do with the former. And the horse training example is misleading in certain respects. If you are a horse training facility and you are charging people for your service, you can be sued for your employees’ acts. I don’t see why that was ever a particular problem. Companies have always had uniform practices and standards for, e.g., accounting. Why didn’t applicants smell the possibility of profit from sueing companies for their accounting and/or customer relations practices?

Your comment is interesting. The relationship between software patents and patents on abstract processes is truly intimate. After companies began selling software for executing abstract processes and the PTO blinked and issued patents on those processes, the rising tide of litigation windfalls ensured the interest of patent attorneys and the rest is history.

Dear Mr. Mooney:
With respect to Mr. Murdoch, I believe he is doing more to disseminate the free flow of information than any many in history. What he proposes will limite the propagana effect of corporate news that has controlled the masses for decades. There are so many primary sources of information that news stories will be propagated freely and independent of the taint of corporate bias. There is, of course, the reality that the Pentagon, CIA, NSA and other corporate functionaries will dissimenate information under the guise of being an independent bloggeer, but that risk is present today. What I predict will occur is that Mr. Murdoch will determine that his corporate payment for information will be an abject failure, excepting, of course, if it is used as nothing more than an funding source for the aforementioned functionaries. That is entirely possible. In this regard, mainstream (pay for) media will be nothing more than an insurance policy for the corporate elite to ensure that a certain percentage of the population’s minds are filled with information favorable to the corporate elite, vis-a-vis the aforementioned functionaries.

“The operator’s hand taken off, and the main circuit is broken, the receiver within it is not a magnet, the movable lever has been withdrawn, by its spring, from the platina point, the local circuit is broken, the register magnet is no longer a magnet, and the pen has been sprung down from the paper, and stands ready to repeat and add another character of the intelligence.

The operator’s hand upon his lever, and another character is added. And,

These are the characters recorded, and how they are read: .- is A, -… is B, -.-. is C, -.. is D, . is E, ..-. is F, –. is G, …. is H, .. is I, .— is J, -.- is K, .-.. is L, — is M, -. is N, — is O, .–. is P, –.- is Q, .-. is R, … is S, – is T, ..- is U, …- is V, .– is W, -..- is X, -.– is Y, –.. is Z, and such is the alphabet.

Page 56 U. S. 95

Then .—- is 1, ..— is 2, …– is 3, ….- is 4, ….. is 5, -…. is 6, –… is 7, —.. is 8, —-. is 9, —– is 0; and these are the numerals.

The holding down the lever an instant indented one dot .; the holding it longer made a dash – of a length corresponding to the time. The dots were made at distances corresponding to the time the hand was held off the lever. And,

Footnotes 29-33 of Stern’s brief:
“29 This may require fine distinctions. Making steel or shoes is within the useful Arts, but engaging in the business of selling steel or shoes is not within the useful Arts. A trader is not an artisan. Noah Webster defined a trader as “[o]ne engaged in
trade or commerce; a dealer in buying and selling or barter.”
30 Classically, the seven so-called liberal arts were arithmetic, geometry, music, astronomy, grammar, rhetoric, and logic.
31 Performing arts include performance of music, drama (including tragedy and comedy), and dance.
32 Literary arts include composition of poetry (as distinguished from its recitation or performance).
33 Martial arts include boxing, wrestling, and fencing

“Mal, it’s because the statute changed in 1952, and it took several decades before the word trickled out to those inventing new processes, and several court decisions before those people started believing that things really had changed”

Maybe you didn’t notice, but the USSC itself established that nothing changed in the transition from “art” to “process”. Nothing is ever going to have changed from that transition.

MM: It actually has everything to do with what she said but rather than admit you were being a jackass you are going to stick your head in the sand and pretend otherwise. Nothing new here, folks. Move along.

Sotomayor’s statement was in response to an assertion that patents provide disclosure, and thus contribute toward free flow of information. The disclosure of an invention to the public is free flow of that information; information that would have otherwise likely remained secret.

Use of that information, i.e., that use which may require licensing fees and other steps, legal steps, is different from a “flow” of information.

Everyone will declare victory (except Bilski) and no one will be happy.

I can’t say I would be unhappy with a relatively flexible test that could be used to bar claims like Bilski’s. The major problem with the Bilski test was that, as applied by the Federal Circuit, both prongs elevated form over substance. In the end, there was no “there” there.

MM: “useful Art” as it was intended by the framers. As pointed out in Stern’s brief, “useful Art” was a somewhat well understood term at the time. It was contrasted to other types of Arts, which were also well understood. Lets call the other Arts the Excluded Arts.

Stern argues that a Useful Art today is an extension what was understood then. I would argue the contrary: if it is not one of the Excluded Arts, but is useful, it must be a Useful Art because it is either an Useful Art or an Excluded Art.

As for the question asking why there haven’t been more business method patents in the past, here’s my take. How does one make money off a patent? Simple–you have to be ready to sue any infringers. If you can sue two manufacturers who make a product or 20,000 customers who use the product, who do you go after?

As I drafted claims, my mentor always made sure I knew who the client would want to go after.

So, if you patent a method of training horses that 20,000 people are going to use, how do you sue all of them for infringement? Especially since everyone can read the details of the method in the published patent.

Same idea with business methods. How do you sue all the potential infringers?

Answer: if the business method is embodied in software, you can sell the patented software and go after infringing manufacturers instead of infringing users.

So I think that it wasn’t until the rise of easily reproducible computer software programs that it became worthwhile, for the most part, to patent business methods. This has been my own experience, too. Before State Street, I patented so-called software patents that were used for specific control purposes, such as the methods used for controlling elevator cars. After State Street, I patented business methods that could be embodied in software and sold to the customers.

*******why weren’t these crappy patents on manipulating money and “recommending a friend” sought with earnest until very recently? ******

Mal, it’s because the statute changed in 1952, and it took several decades before the word trickled out to those inventing new processes, and several court decisions before those people started believing that things really had changed. Apparently, the word still hasn’t made it to some of the supremes, and even some ip professionals.

Mal, it’s because the statute changed in 1952, and it took several decades before the word trickled out to those inventing new processes, and several court decisions before those people started believing that things really had changed. Apparently, the word still hasn’t made it to some of the supremes, and even some ip professionals.

“Joe Breimayer – Agreed. I think they will dump the MOT test and replace it with another incoherent and impossible to implement standard. I’d go so far as to say the standard they’ll replace it with will be a regurgitation of existing contradictory precedent. Same as it ever was.

Bilski will not get a patent, which will be the closest thing to guidance we’ll see. Everyone will declare victory (except Bilski) and no one will be happy.

Troll, if you stop cheerleading for the worst of the worst wankers simply because they are arguing with me or 6, you’ll be better off, trust me. Same goes with NWPA, who I simply assume is your sockpuppet (or AI’s).

Morse’s Fifth. “I claim as my invention the system of signs, consisting of dots and spaces, and of dots, spaces, and horizontal lines, for numerals, letters, words, or sentences, substantially as herein set forth and illustrated, for telegraphic purposes.”

smashmouth I also think the disclosure supposedly given by published patents and applications is greatly overrated, given the relatively lax standards of enforcement of Section 112.

Not only that, but patent applications are uniformly among the worst drafted documents that exist on earth and also among the least reliable. You’d have to turn to Conservapedia or something of that ilk to find a similarly low ratio of signal to noise.

If the claimed subject matter has a kind of utility that is recognizable as a “useful Art,” then it should be patentable even if claimed as a process and regardless of whether it is claimed in connection with a computer or article manufactured. That is the point Jakes was making.

Recognizable or “recognized by the framers”?

Obviously the latter test would not mean that “useful art” is limited only to technologies that existed at the time of drafting the amendment. But it does mean that “useful Art” doesn’t mean “anything that anyone can argue with a straight face is useful to someone.” The “dog that didn’t bark” has been pointed in these threads many many times: why weren’t these crappy patents on manipulating money and “recommending a friend” sought with earnest until very recently? And please spare us the propaganda/myth about the “new” field of “financial engineering”.

Joe Breimayer – Agreed. I think they will dump the MOT test and replace it with another incoherent and impossible to implement standard. I’d go so far as to say the standard they’ll replace it with will be a regurgitation of existing contradictory precedent. Same as it ever was.

Bilski will not get a patent, which will be the closest thing to guidance we’ll see. Everyone will declare victory (except Bilski) and no one will be happy.

Ken Brooks said, at Nov. 10, 12:33 p.m.:
“I think Justice Sotomayor makes one of the most interesting points about how patents limit the free flow of ideas. Actuatlly that is abosolutely incorrect. Patents facilitate the free flow of ideas, but limits the ability to embody the patented idea into a useful article.”

I disagree with “absolutely” incorrect. Although generally what you say is true, I agree with Mooney’s point that in the context of Bilski, where the claims are directed to flow/dissemination of information, a patent would actually restrict the flow of information among the universe of potential infringers, i.e., everyone else.

Another way patents may restrict information flow is because of the disincentive to know others’ patents so as to avoid willful infringement (lessened but arguably not eliminated by the CAFC a few years back in the Knorr-Bremse case).

I also think the disclosure supposedly given by published patents and applications is greatly overrated, given the relatively lax standards of enforcement of Section 112. It seems the incentive to get overly broad claims to capture future infringers far outweighs the 112 requirements of definiteness and enablement. Do you really think anyone who actually does research would wade through the mountain of patents and their vague disclosures to discover anything new and useful? I really doubt it.

Posted by: Trilithon | Nov 10, 2009 at 12:01 PM “If the use of a computer wasn’t critical to eligibility in the State Street decision then why shouldn’t Bilski be eligible as-is? If the use of a computer actually did make the difference in State Street, why shouldn’t computer-Bilski be OK?”

This is the question is it not? The Supremes seem to understand the issue is not the four categories: machine, article of manufacture, process or composition of matter, but utility. This contrasts heavily to the government’s positions that seems to elevate form over substance and would patent the Bilski claim if encoded on a disk or executed on a computer.

6 – the request for proof wasn’t proof from you, it was proof from your erstwhile examiner buddy Malcolm.

You are wrong – yet again (how do you stand it!) regarding Alappat. Even Lord Kappos regards Alappat as I do. The Supremes comments change nothing, unless you want to ignore Sotomayer’s comment on State Street as well.

Malcolm,

“But I’m glad to hear that you disagree with AI’s position, now. You’ve taken a step a right the direction” – misdirection must be an art they teach you examiners. You haven’t proven anything. My support for AI was in regards to your tricks, misquotes, purposely twisted half quotes and assorted other garbage that you want people to review. Several people, including your brother examiners posted that the hypo claims you so desparately want to ensare people with are CRAP. If you want poeple to address issues, you must put them insubstantive form – like my challenges to you.

Note also that later on at p.6, Judge Rich comments that “The question of whether a claim encompasses statutory subject matter should not focus on which of the four
categories of subject matter a claim is directed to —process, machine, manufacture, or composition of
matter—but rather on the essential characteristics of the subject matter, in particular, its practical utility.” Can’t say that is true to the statute, but that’s what he said.

Posted by: jk | Nov 10, 2009 at 11:49 AM: SOTOMAYOR in page 30 said: No ruling in this case is going to change State Street. It wasn’t looking at process or the meaning of process. It was looking at something else.

Any ony knows what she is talking about?”

The State Street claim was to a machine, not to a process. Somehow she thinks the “utility” issue here was not common to both processes and machines. She is wrong in that.

What is the Morse Code — the dots, spaces and horizontal lines and their translation to numbers and letters? Is it a new machine, process, article manufacture or composition of matter?

It’s an abstraction and the claim should never have issued. At some point the Supremes might actually come to terms with the Morse mistake but, as you can imagine, correcting the record about an ancient patent is of little interest to them.

Ken: This is interesting, becasue the real parties in interest are the content owners. They do not want to have to pay a technocrat to spread their content.

And then you have Rupert Murdoch who doesn’t want to allow Google to spread links to his content for free. Here’s the thing about most mega-corporate “content owners”: they are managed top to bottom by clueless idi0ts (let’s call them “financial engineers”) who care nothing about the content they own and are only watching the bottom line.

The Bilski claim is like a claim to balancing the load on a boat. Is it required to say that I move weight to the other side until the boat is balanced in order to make the claim concrete or that I merely move weight to the other side thereby adjusting the balance of the boat?

It seems to me that the moving of weight should be enough if it is done for the purpose.

Your entire opinion on Alappat says is nothing but pure form over substance, and it is spread all over this blog. Many out there agree with your position, the office included. But that doesn’t affect what you want to do with what Alappat said. You want to patent the algorithm in any way shape or form that the office will let you. It’s form over substance in its purest embodiment. This is why a justice brought up that the office shot its own position (that it spent 50 pages establishing) in the foot by bringing up simply putting the “idea” or “algorithm” on a general purpose computer, thus presumptively making a “new machine”.

The real kicker is that the CAFC didn’t even intend to mean what you, and so many others, implied them to mean. They weren’t wrong in what they said in Alappat, people just twisted what they said.

I don’t want to turn this into a personal fight about that issue today so you may have your say about it if you want but I’m not going to continue to discuss it in this thread.

No matter which way this case goes, I predict much pain in the future of software patenting since the justices have shown, excedingly clearly, that their opinions are ripe for the taking by someone with the means to argue a case before them against the patenting of software.

MM: “Ned: Jakes answer on behalf of Bilski said it all: that the State Street invention was patentable regardless of its tie to a computer; otherwise that would elevate form over substance.

Gee, Ned, I never thought you cared. All these comment threads with AI and his cheerleader Troll Above Law going on and on about how form trumps everything (i.e., if it’s a process or a composition or an article of manufacture, it’s eligible, end of analysis) and you failed to correct them even once. And now you claim that Jakes must have been reading your comments? LOL.

For what it’s worth, the discussion about Morse’s patent was a sideshow and a waste of time. You could almost hear Justice Stevens thinking “I knew Morse. Morse was a friend of mine. You’re no Morse.”

Malcolm, I believe I have made the argument before that State Street Bank could not withstand the new MOT test simply because it recited a computer. I also think that merely reciting a program encoded on a article of manufacture, the so-called Beauregard claims, elevate form over substance.

The true question has always been “utility.” Something that does not have the kind of utility recognizable as a “useful art” cannot be made patentable subject matter simply by “reciting” one of the four categories. Thus a claim directed to a law of nature cannot be made patentable by simply calculating its formula on a computer or encoding it on an article of manufacture.

But there is a corollary. If the claimed subject matter has a kind of utility that is recognizable as a “useful Art,” then it should be patentable even if claimed as a process and regardless of whether it is claimed in connection with a computer or article manufactured. That is the point Jakes was making.

Actually the discussion of the Morris case took place not in the context of claim eight but in the context of claim five. When Justice Kennedy stated that he assumed that one cannot patent an alphabet, Jakes rejoined that in fact Morse had patented an alphabet in his claim five. When Justice Sotomayor rejoined that she thought that the only thing that Morse had patented was use of his code in connection with his telegraph apparatus, Jakes explained that that was not the case with respect to claim five, which only required to use the code in connection with telegraphy.

So I ask the question here, because I really don’t know the answer. What is the Morse Code — the dots, spaces and horizontal lines and their translation to numbers and letters? Is it a new machine, process, article manufacture or composition of matter?

The USA relies on a visit to SCOTUS once every 30 years. The EPO relies instead upon a thousand unappealable Technical Board of Appeal decisions per year, sometimes briefly conflicting with each other, from 21 equal rank Technical Boards of Appeal. TBA caselaw is an evolution, a “Survival of the Fittest Legal Line of Logic” to settle what’s patentable, and what’s not. At the EPO, legal certainty rises, with every year that passes.

The reaction of visiting American legal scholars at a recent EPO Seminar on patentability of software? “Europe is still in the 19th Century”. Huh?

I think Justice Sotomayor makes one of the most interesting points about how patents limit the free flow of ideas. Actuatlly that is abosolutely incorrect. Patents facilitate the free flow of ideas, but limits the ability to embody the patented idea into a useful article. Copyrights, on the other hand, have been used to limit the free flow of ideas, because of its protection of expression. I think that out of Bilski we are going to see, finally, limitations on the restrictions that Copyrights place on the free flow of ideas. I mean if you take Sotomayors analysis to heart, it appears that she is worried about intellectual property’s impact on free speech. This is interesting, becasue the real parties in interest are the content owners. They do not want to have to pay a technocrat to spread their content. I saw this dichotomy back in 1992 when writing my law review article as a 2L. Again we see the battle for what it is. The technocrats against the technologically unsophisticated.

@Patent Attorney “I like how even the Chief Justice confused section 101 and section 103… that’s exactly what the Patent Office as been doing with most 101 rejections. I sure hope he gets it right in the end…”

Thank you Trilithon. The absence of an American 103 filter anything like the European one (Aharonian: there is no definition of “obvious”) is exactly why EPO 101 thinking doesn’t help with your 101 issues.

Conversely though, if SCOTUS comes up with a brilliant bright line test of inherent patentability, well that just might be useful to Europe’s never-ending process of keeping up-to-date its definition of “technical”.

I predict that the Court will enunciate another incoherent and impossible to implement standard of 101 patentability. As the old saw goes, “bad facts make bad law”. Notice the absurd hypotheticals that the facts of this case prompted the justices to imagine. The blame for what we will have to deal with for years to come (until another bad case goes up) should fall on Bilski et al for pursuing this case so far. It reminds me of the absurd consequences of Festo, which should have been decided as a simple case of file wrapper estoppel or not.

No amount of mental concentration is going to abstractly “initiate” transactions as between the identified traders. The initiation steps in Bilski’s claims require physical actions. Jakes’ answer should have been a simple, NO, Bilski Claim 1 does not and cannot cover a purely abstract process your Honor and that is because … (repeat above)

What Max didn’t mention is that in the EPO, having passed “101” by mere recitation of a computer, “non-technical” elements are excluded from the the analysis of 103. Bilski-on-a-chip would fail 103 at the EPO regardless of whether the underlying method was old or obvious, because it is non-technical and therefore cannot contribute an inventive step.

If the use of a computer wasn’t critical to eligibility in the State Street decision then why shouldn’t Bilski be eligible as-is? If the use of a computer actually did make the difference in State Street, why shouldn’t computer-Bilski be OK?

You put on your pom pom’s and played cheerleader for AI, Troll. Don’t you remember? You’ve forgotten how you played cheerleader for AI when I presented AI with a claim that was all about “form over substance”? And both AI and you refused to explain why the claim wasn’t patentable? Really, Troll, you can’t be a cheerleader for AI and his fundamentalist views about patent eligibility on one day and then turn around and claim you never knew him the next day. Please.

But I’m glad to hear that you disagree with AI’s position, now. You’ve taken a step a right the direction. Only several thousand more to go.

It actually has everything to do with what she said but rather than admit you were being a jackass you are going to stick your head in the sand and pretend otherwise. Nothing new here, folks. Move along.

EG: The Chief Justice was particularly on target is asking Jakes whether the Bilski claim covered an abstract idea. In other words, what Judge Rader said in dissent was correct: this Bilskl claim is not patentable subject matter because it simply covers an abstract idea.

I agree that Rader’s approach is certainly one way to kill the claim under 101. The question is: what exactly was Rader’s approach? Isn’t it true that Rader “dissected” the claim? When is it permitted and when isn’t it permitted, or is it always permitted?

I don’t have a problem with a good deal of leeway being granted to the PTO and judges when making the determination as whether a claim is “abstract”. But clearly some people have big problems with a fluffy KSR-esque test for patent eligibility and favor an alternative approach that would elevate form over substance.

Ned: Jakes answer on behalf of Bilski said it all: that the State Street invention was patentable regardless of its tie to a computer; otherwise that would elevate form over substance.

Gee, Ned, I never thought you cared. All these comment threads with AI and his cheerleader Troll Above Law going on and on about how form trumps everything (i.e., if it’s a process or a composition or an article of manufacture, it’s eligible, end of analysis) and you failed to correct them even once. And now you claim that Jakes must have been reading your comments? LOL.

For what it’s worth, the discussion about Morse’s patent was a sideshow and a waste of time. You could almost hear Justice Stevens thinking “I knew Morse. Morse was a friend of mine. You’re no Morse.”

“With respect to flushing out what separates an abstract idea from a concrete, real application, “useful, concrete and tangible result” would again be applied.”

Avast,

An astute observation about how to separate out the “abstract idea” chaff from the “real world” wheat. Reinstituting the “useful, concrete and tangible result” standard would do much to make 35 USC 101 objective. I agree with you that the Bilski claim would have failed this standard as not providing, as you say, a “concrete outcome.” The Federal Circuit should have never dumped this standard in Bilski.

Mike –
Did you expect me to find a patent to the Jedi mind trick applied to horses? Even Robert Redford used an apparatus (e.g., rope, saddle, etc). Get real and see the straw man Scalia set up for what it was. Nonsense.

Ghost of Learned Hand, I fully agree with you that the Court is unlikely to create a new rule given their lack of familiarity/comfort with patent issues. The caution they seem to project is comforting because they appear to have some fear of damaging a patent system that they do not have a strong grasp of. The Court has a pattern of softening rigid tests, as you indicated, in such cases.

I shall not today attempt further to define the kinds of material I understand to be embraced within that shorthand description [“useful arts”]; and perhaps I could never succeed in intelligibly doing so. But I know it when I see it, and the patent application involved in this case is not that.

Not that I disagree with you, but I would also add that the softening of the “rigid” machine or transformation test vis a vis KSR will be nothing more than a churn, a knee jerk, faute d’mieux if you will, as the SC has been wont to do in patent cases of late. Its the best they can do given their limited capacity to deal with these “tricky” patent issues.

I think the SCOTUS questioning provides a clear indication that Bilski’s patent will remain invalidated on 101 grounds, perhaps under Rader’s notion that the claims remain little more than an abstract idea with respect to what is actually produced. All that was performed, in essence, was initiating a series of telephone transactions without a concrete outcome.

With respect to the “machine-or-transformation” test, SCOTUS seemed to tip their hand that they feel this test is too rigid. I believe it was Justice Breyer who asked for assistance in crafting a new test, but received none from the counsel. He conceded that he could not conceive of an adequate test himself. I suspect that the Court will discard the machine-or-transformation test in favor of a more loose and broad rule, ala KSR. In other words, they may adopt reasoning along the lines of “machine-or-transformation is a test, but it is not the test.” Perhaps the Court will accept J. Michael Jakes’ invitation to return to “first principles” and reiterate that so long as subject matter is not an abstract idea, law of nature or physical phenomenon, it passes the loose sieve of 101. With respect to flushing out what separates an abstract idea from a concrete, real application, “useful, concrete and tangible result” would again be applied. The USPTO would then be relied on to weed out bad patents via 102, 103 and 112 (I believe Sotomayor had a comment along these lines).

Granted, everything at this point is mere speculation, and comments by the Court do not necessarily indicate that something particularly drastic will happen. It seems to me that the oral arguments in KSR were considerably more extreme than the decision itself.

We all read that “free flow of information” comment, but nobody has yet made light of it.

I’ll advance a sad reason for this: because we have come to expect inarticulation and lack of comprehension from the courts regarding important patent matters, and so such an event was so ordinary as to not merit mention.

Arguably, in no other area of human endeavor has there been so much advance in so short a time, as in technology between the first adoption of 101 and the present day.

When was the current 101 written?

Was it original and unchanged in 1952?

Why doesn’t anybody acknowledge that 101 was for another time, when the world was still large and many naturally-occurring things and places remained undiscovered?

Put yourself back in a world without telephones, flush toilets, electricity, plastic, airplanes, cars, aluminum, etc.. I’m sure 101 was used many times, to good effect, for instance, to deny patent rights to a natural plant used as a seasoning or spice.

Maybe it really was designed to limit scope to only that made by Man, to exclude naturally-occurring substances and processes.

101 was VERY useful at that time–now, not so much. Why try to breathe life into it? Leave it alone, to be revitalized when we begin to bring back to Earth naturally-occurring extra-terrestrial chemical samples.

I agree with Inviting Body Punches – reading this transcript make me very pessimistic, and the judges seem to have a firm opinion on how the case should turn out without really analyzing or understanding why.

If they conflate 101 and 102/103, and compare a typewriter to a computer, this isn’t going to end well.

I think we have to be clear. The SCOTUS is not likely to read out section 101 from the patent act. Those advocating that bilski should be analyzed simply under 102 and 103 are doomed to be disappointed. The SCOTUS seemed only somewhat concerned about taking concepts from 102 and 103 to kill patents and patent applications that they felt clearly are not the type of thing that should be patented.

Moreover, some of the more senior justices on the court are asking legitimate questions: if these have always been patentable, why aren’t there lots of examples of people patenting business methods before? After all, you don’t even need any mechanical, electronic, or biological expertise to come up with them. For this reason, I personally liked the typewriter example. Take an otherwise unpatentable business method not tied to a machine and add a machine = patentable subject matter!

Finally, Les’ examples of animal training patents do not support the point. Of the cursory review of the claims of those patents, guess what: they all involve machines! For instance (5,566,645):

2. A method for training animals using primary reinforcement to reinforce desired animal behavior during training by providing a reward to an animal simultaneously with, or immediately following, a desired behavior, comprising the steps of:

a. selecting a reward substance to be used during an animal’s training session, said reward substance selected from the group consisting of liquids, solids, and mixtures of liquids and solids;
b. containing the reward substance in a reservoir during the animal’s training session;
c. connecting the reservoir to a flow control means by means of a supply tube;
d. connecting the flow control means to the animal’s mouth by means of a delivery tube;
e. securing one end of the delivery tube in the mouth of the animal; and
f. controlling the starting and stopping of a flow of the reward substance from the reservoir, said flow control occurring simultaneously with, or immediately following, an exhibition of the desired behavior by the animal during the animal’s training session.

Does anybody wonder whether “international” ideas that some Amicus or other wrote about are only serving to confuse at least one of the Justices. I have in mind Article 52, EPC (Europe’s 101), where a mere reference in the claim to a computer, or a disc, is indeed enough to endow the claim with “technical character”, and thereby move the claim past 101 and on to the higher hurdles of 102, 103 and 112 (where it gets weeded out). It is an issue that many outside EPO circles have difficulty grasping. I haven’t been through the transcript but I wonder if the point did come up and, if so, whether any of the advocates was clever enough to help the Justices through the point.

First, do we want to define what is IN or what is OUT? Machine-transformation defines what is IN. Diehr defines what is OUT.

If you want patents to be narrow, define what is IN. If you want patents to be broad, define what is OUT.

Second, do we want to use a test or categories? A test is rigid. Categories are flexible. Choose one.

Now to my rants (in no particular order):

Scalia – your lifelines could drown a man
Breyer – please apply your cleverness for good
Ginsburg – please move to Europe
Sotomayer – “something that is reasonable” !?!
Roberts – can you help a brother out?
Kennedy – is that a comments or a question?
Stevens – less is more
Alito – more please
Thomas – Thomas? Thomas? Thomas?

A method for managing the consumption risk costs of a commodity sold by a commodity provider at a fixed price comprising the steps of:

(a) initiating a series of transactions between said commodity provider and consumers of said commodity wherein said consumers purchase said commodity at a fixed rate based upon historical averages, said fixed rate corresponding to a risk position of said consumer;

(b) identifying market participants for said commodity having a counter-risk position to said consumers; and

(c) initiating a series of transactions between said commodity provider and said market participants at a second fixed rate such that said series of market participant transactions balances the risk position of said series of consumer transactions.

The Fed Circuit dismiss the “useful, concrete, or tangible result” test. Are we agreed the Bilski claim meets that test?

Many seem to dismiss it as “an abstract idea” but it includes process steps (“transactions between”, etc.).

The Justices appeared to dismiss it based on novelty/obviousness.

One should ask did the patented claim make an innovative contribution to the public domain. In Bilski’s case, did the inventors develop a new method of reducing risk that was new, nonobvious and provided a useful, tangible result? If so, why not grant a patent?

If new or nonobvious such a claim would not discrupt anyone else’s activities and only provides a limited period of exclusivity. It doesn’t cover any and all “methods of hedging consumption risk”, only that specific method described in the claim, each word of which limits its scope.

One issue with “business methods” is many business opted for trade secret protection so their prior use is not public use that can block a subsequent inventor from obtaining a patent. So, Congress provided a prior user defense for business method patents.

In the end, what am I missing here? Why are so many interested in discriminating against certain innovators (Bilski/Warsaw are math guys rather than chemists or EE- so what?).

Use “useful, concrete and tangible” as the test, and rely on 102 (novelty), 103 (nonobviousness), and 112 (definiteness, enablement, written description and breadth) to block the frivilous patents from granting.

Oh yeah, strengthen the prior user defense and make available for all (including in the software space).

In the end, if I invent and develop an iphone application (SOFTWARE) that turns it into a mini jet pack to taxi me around, I better be able to patent that software.

I understand the nature of oral argument before the Supreme Court, but I get the distinct feeling that both the justices and the attorneys are making conclusory statements without having examined exactly how or why they reached those conclusions.

The only evidence I have for this is the nature of the statements advanced–it sounds like a sandbox-level discussion of patent law. They didn’t drill down into the REASONS for their statements.

They never even came close to reaching any consideration that could be pivotal in any future test.

I could give many examples, but that would be tedious, and I’m sure many blog readers already know what I’m talking about.

This discussion was less than a scratch of the surface of patent law–it was more like a scuff.

I think the foundations remain as chaotic as ever.

But then again, why would we expect anything else from a bunch of political appointees? Do any of them have backgrounds in logic? Semiotics? Hermeneutics? Physics? Math?

I think the justices were less concerned about whether a programmed computer is a new machine in the sense of 102/103, as opposed to a particular machine that would necessarily qualify as 101 subject matter without regard to the claimed function the programming computer performed.

I have a feeling that many of the justices think that claiming an abstract function performed by a computer is still abstract and thus still not 101 subject matter.

So you better add the Internet to your claims because it’s definitely a particular machine: a series of tubes!!!!

The government arguments for patentability of software were so bad that it appeared that they were trying to lose the issue. Since when has it been the PTO position that merely reciting a computer in the claims is enough?

I hope noone is surprised by anything Stevens and Breyer say against patenting software.

“If the question Scalia was asking was why are there no patents to magical powers to hypnotize a horse, I think the answer is that there are no magical powers to hypnotize a horse, and if there are, you would have found them unpatentable as being embodiments of super “natural laws”.”

I think what he was getting at was that there were probably people who trained horses without the use of physical devices. Maybe not literal horse whispering, but perhaps using a method that required no more recited physical structure than Bilski’s. And if so, why are there no patents of this nature?

Of course, that’s just how I read it, I certainly wouldn’t claim to have a clue what goes on in that man’s mind.

“If the question Scalia was asking was why are there no patents to magical powers to hypnotize a horse, I think the answer is that there are no magical powers to hypnotize a horse, and if there are, you would have found them unpatentable as being embodiments of super “natural laws”.”

I think what he was getting at was that there were probably people who trained horses without the use of physical devices. Maybe not literal horse whispering, but perhaps using a method that required no more recited physical structure than Bilski’s. And if so, why are there no patents of this nature?

Of course, that’s just how I read it, I certainly wouldn’t claim to have a clue what goes on in that man’s mind.

“I also give high marks to what Justice Sotamayor appears to understand: the Bilski claim is being judged for patentability under the wrong patent statute. It’s pretty clear to me she feels this Bilski claim should be judged first under 35 USC 102 or 103, not 35 USC 101.”

Then what’s the purpose of 101? Why not just read it out of the statute completely and deal only with 102/103 issues?

I wouldn’t be too hard on Justice Stevens. He understands much more than the other Justices about how software works. See his dissent in Microsoft v AT&T. His analogy to a player piano (not that much different from a Jacquard loom, the predecessor to the IBM punch card) is much better than the “architectural blueprint” one the SCOTUS majority used in the Microsoft case.

The other thing is that these arguments about computers and software don’t hold water when compared to machines that do things like process wheat. All the machines that process wheat may have been known and the only thing that changes is the wheat. What changes when you use a computer is information is processed just like wheat is processed.

I think that some of the views in the SCOTUS are based on a fear of computers and perhaps even a feeling of indignity that a machine is challenging their intelligence. I suspect that their views are grounded in religeon. Stevens views himself as a supreme being and that the computer can’t do anything information processing that he can do that is more than a calculator. Sorry, J. Stevens, but you don’t get it.

I like Stevens saying that gee, those computers are just so simple you just take it to someone that knows computers and the next thing you know the whole thing is done. Those machines are everywhere. Those calculators. The software is like a DVD afterall.

Stevens, learn to read. Do you realize that our entire perception of humanity has changed because of computers. That computational intelligence is all that we are. Those machines are challenging our intelligence.

No doubt that when you’re dealing with an animal that out weighs you by 5 or 10 times, there are going to be apparatuses involved.

If the question Scalia was asking was why are there no patents to magical powers to hypnotize a horse, I think the answer is that there are no magical powers to hypnotize a horse, and if there are, you would have found them unpatentable as being embodiments of super “natural laws”.

Having now read through the oral argument transcript, it speaks volumes on what I’ve said before: using 35 USC 101 as anything other than a coarse screen to rule out patents on abstract ideas, natural phenomena, and discoveries of laws of nature is an exercise in futility. The Justices repeatedly asked for a test other than the Federal Circuit machine or transformation test that could be used, and it’s clear from what was said during oral argument that no objective test can be articulated beyond screening out abstract ideas, natural phenomena, and discoveries of laws of nature. Justice Breyer frankly confessed that he couldn’t come up with any meaningful test under 35 USC 101. The Chief Justice was particularly on target is asking Jakes whether the Bilski claim covered an abstract idea. In other words, what Judge Rader said in dissent was correct: this Bilskl claim is not patentable subject matter because it simply covers an abstract idea.

I also give high marks to what Justice Sotamayor appears to understand: the Bilski claim is being judged for patentability under the wrong patent statute. It’s pretty clear to me she feels this Bilski claim should be judged first under 35 USC 102 or 103, not 35 USC 101. And I give very low marks to Justices Scalia and Ginsburg. Scalia obviously can’t get past the 19th Century. And Justic Ginsburg’s comment about looking to international patent standards was very nicely shot down by Jakes.

I thought Jakes did a pretty good job considering the difficult position he was trying to argue for. He at least understands that O’Reilly v. Morse is really an enablement or claim scope case, not a patentable subject matter case. He certainly had a better command of his argument than those who argued in KSR International.

“The nature of my invention consists of providing a back flat part of a spring tree (a) with springs (b) whose thinner ends come to lie in about the center of said tree, under a turning plate (c) permitting the springs to escape from on the swingle tree”

I haven’t read much more, but it seems already to have physical components.

A Typewriter is just a Typewriter. A Computer is not. I said nothing about a Typewriter. Justice Roberts was making a point. I was making a Point. A Computer is not the point. The point is the fact that a Computer is a Vehicle. And if need be lets put wheels on it. Maybe that will make it a true Vehicle. And an easier in the …. abstract
Sarah McPherson

One of the Justices mentioned the “technical” standard in Europe, where patents are granted “for any invention in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application”. I should have thought that methods of training horses would be patentable in Europe.

As to methods of training humans, however, that might get caught by the explicit statutory provision in Article 52(1)(c) of the EPC, which recites that a new, enabled and non-obvious proposal which is a method for:

performing a mental act, or

playing a game, or

doing business

is NOT a patentable invention.

It seems to me relatively simple to distinguish between a disc carrying a new song (unpatentable) from a disc carrying software that makes (say) images on monitor screens sharper (patentable). The dilemma is which business methods should be patentable. SCOTUS lacks the explicit statutory exclusion of the EPC, and the thousands of EPO TBA Decisions that find some methods nevertheless “technical” (in the German sense) enough to get around the narrow “business” exclusion. for example, animal husbandry is technical, but currency hedging isn’t.

The Bilski Decision, given after due consideration of all the world’s experience of business method patenting (or not) up to the present, can’t help but be a landmark.

After this precis of the oral argument, however, I wonder how many of the Justices will be able to keep 101 separate from 102,3 and 12. The “typewriter” exchange doesn’t exactly build confidence.

Justice Roberts said it all.
A typewriter is a typewriter. It will always be just that. But a Computer is the vehicle that carries the innovation further. If you can give my car new wheels, a new ashtray, a new radio, that I can Patent. Then why can’t the Computer be the vehicle for more Ideas that Patent.
Sarah McPherson

METHOD OF RELEASING HORSES FROM CARRIAGES
US Pat. 2601 –
80 The object and utility of my invention is this: In case of danger arising
from the horse becoming wild and unmanageable the rider or conductor pulls the

METHOD OF RELEASING HORSES FROM CARRIAGES
US Pat. 2601 –
80 The object and utility of my invention is this: In case of danger arising
from the horse becoming wild and unmanageable the rider or conductor pulls the

METHODS OF TRAINING HORSES
US Pat. 3099248 – Filed Jan 25, 1962
In the method of training horses of claim 1 the recording of vocal sounds and
noise made by spectators at race tracks during the running of horse races and
…

Animal training method and apparatus
US Pat. 5566645 – Filed Aug 1, 1994
This lengthy 65 training period is mostly due to the current time delay between
training rewards and the horse’s desired behavior. ANIMAL TRAINING METHOD …

Equestrian training method
US Pat. 6568940 – Filed Sep 25, 2001
Additionally, it would be desirable to provide a method and apparatus for rider
position training, which is finely adaptable to different rider and horse …

Roping training apparatus and method
US Pat. 5080373 – Filed Oct 25, 1990
2, the rein on/off switch is mounted on the chin of the horse replica 22 and is
… The operation of the roping training device 14 and the method of …

Racing speed training and therapy apparatus and method
US Pat. 5176597 – Filed Sep 23, 1991
RACING SPEED TRAINING AND THERAPY APPARATUS AND METHOD BACKGROUND OF THE …. By
supporting a portion of the horse’s weight, it is easier to start the …

Animal training method using positive and negative audio stimuli
US Pat. 5351653 – Filed Oct 6, 1993 – Canine Concepts, Incorporated
No. they impose on the animal For efficient and speedy by Workman describes a
horse training collar which 35 training of animals it is usually necessary to

Take for example the phrase, “useful arts” as it appears in the empowerment clause of the Constitution. How often did the justices use that phrase?

Answer:
Sotomayor: in two questions
Scalia: in one question
All others: 0

—————-JUSTICE SCALIA: Well, if the government says that the — that the term on which it hangs its hat is the term useful arts and that that meant, originally, and still means manufacturing arts, arts dealing with workmen, with — you know, inventors, like Lorenzo Jones, not — not somebody who writes a book on how to win friends and influence people.
What is wrong with that analysis, that that’s what “useful arts” meant, that it always – always was thought to deal with machines and inventions?

JUSTICE SOTOMAYOR: So how do we limit it to something that is reasonable? Meaning, if we don’t limit it to inventions or to technology, as some amici have, or to some tie or tether, borrowing the Solicitor General’s phraseology, to the sciences, to the useful arts, then why not patent the method of speed dating?

One of the things we can do with searchable text, is determine what words or phrases are absent in the questions posed by the justices.

Take for example, the phrase “101”, how often is it mentioned by any justice?

Answer: Only once by Sotomayor:

JUSTICE SOTOMAYOR: Well, that [, the argument that Bilski’s hedge is basically not novel]— that goes back to, not 101 but [to] 102 and 103. That goes back to obviousness or the standard weeding mechanisms for patent.

It looks like at least Jakes and some of the Supreme Court clerks have been reading my posts here. Jakes brought up claim 5 of O’Reilly v. Morse. I made that argument only two days ago here: If claim 5 of Morse was patentable, so should a patent on BCD and its conversion to binary from Benson. They are the same thing in substance. Claim 5 was NOT tied to any machinery, but simply to the use of dots, dashes and spaces for telegraphy, which the patent defined as communicating information at a distance.

6, you got it right. The government’s position that the ONLY thing wrong with the Bilski claims is that it did not, as in State Street, invoke a computer, was effectively skewered by the Supremes. I have been saying this for some time here.

Jakes answer on behalf of Bilski said it all: that the State Street invention was patentable regardless of its tie to a computer; otherwise that would elevate form over substance.

Always be things that are not easy, to draw a clear line, which can be patented, which are not. If that can be patented is said about the things that can be incorporated into the physical, it is not easy also to incorporate the software into that category, because the software is not as real as the computer, telephone, or other objects that can be touched, held, and the like. But interesting to follow the trial of such patents, since many analogies that looks forced to justify a statement.

@Bruce – Agreed. The typewriter was a horrible analogy and shows the Court’s lack of knowledge regarding the innovation that goes into developing new and useful software to help computers do new things.

Most of the anti-software patent people should really focus their energy on patent quality and how difficult it is to invalidate any patent. Many complain about NPEs obtaining and enforcing patents, but independent inventors can no longer engage in licensing activities without risking a DJ action.

We need a system where a patentee can send a letter to a potential licensee/alleged infringer without risk but also without harassing or interferring with the other’s business. The potential licensee should be encouraged to license or fight, depending on whether the patent is believed to be valid. “Willful” infringement should be used as a strong stick to encourage good faith on the part of the licensee and an easy fair reexamination process should keep the patentees in line and honest.

The system is broken, but that doesn’t justify discriminating against certain types of innovation.

Justice Breyer: If a US grade school teacher developed an innovative method to teaching 7th graders math (e.g., a specific, novel, innovative lesson plan) so 80% more student could do simple multiplication before entering high school, shouldn’t the teacher be able to obtain a patent assuming novel & nonobvious? Again, novel & nonobvious so doesn’t impact what teachers have done for centuries, they can keep on doing and even design around (easier with the doctrine of equivalence trimmed). However, for a limited time, they’d need a license from The Teacher to use the invention. Ok, education is not a good example but lord knows we need innovation there.

Justice Scalia: If after centuries of people whipping, kicking, shouting at, etc. to get their horses to act, a man discovers a simple whisper in the ear does the trick, why not reward with a patent if the first to discover the novel method of getting a horse to act? Again, has to be novel & nonobvious. Others can design around (use sign language, writings, talking straight at the horse in a firm voice (above a whisper), etc.). But the first guy to discover the value of the sweet whisper in a horse’s ear was an innovator. Why not provide the option to patent or not? By the way, some horse trainers do have innovative techniques they choose to keep as trade secrets, another form of IP.

Justice Sotomayer: Why not allow patenting of a novel & nonobvious “speed dating method”? Or an improved list of questions to determine whether there will be matrimonial bliss? Err, what’s the current divorce rate? We could use some innovation there as well.

Justice Sotomayer: Don’t mean to pick on you but “a patent limits the free flow of information”. Sounds like you’re channeling Google, the really big company that hates patents since would slow them down from steamrolling over every industry (did you see the stocks of nav companies Garmin and TomTom a couple weeks ago?). Tell us, how does a patent limit the free flow of info? A valid and enforceable patent excludes others from making, using,and selling what is claimed. You can read a patent, improve on it (and patent those improvements), design around it, make copies of it, color on it, fax it, email it, etc. How does a patent limit the free flow of information? A valid and enforceable patent might, on a really good day, prevent another from commercializing what is claimed. Alledged infringers can design around, defend, invalidate, hide, or simply try to license the patent.

Patents do improve the flow of information since many processes that could be kept secret (consider many financial modeling patents), but such inventors agreed to disclose to get the limited exclusive rights provided by a patent. Keep in mind that now that patent applications are published regardless of whether granted, its not as good a deal for the innovator as before.

Regarding “requiring licensing fees and other steps, legal steps”, yes. Same with trademarks, copyrights and other forms of IP. Maybe it would be better to focus on reducing these transaction costs. Provide incentives for parties to agree to reasonable license fees for valid patents, encourage communication between parties, etc. The Court’s decision in MedImmune was a step in the wrong direction since reduces communication that can develop licensing. Now it’s sue first.

Justice Breyer: “There are four things in patent law which everyone accepts”. First, there’s another positive. When there are strong, easily enforeable patents, others further innovate when designing around. Designing around valid patents is encouraged by the patent system and is considered part of the innovation ecosystem. Another arguable benefit is allocation of resources. Do you want dozens of copycat companies based on the same innovation or a few competiting entities that cross-license and innovate around and past eachother? Minuses? Yes, for a limited period of time, the patentee can charage a higher price if its a strong valid patent without noninfringing competitors.

Justice Breyer: “the act of getting permissions and having to get permission can really slow things down and destroy advance” Sounds like your channelling Google as well. Yes, if there’s a valid and enforceable patent in your way, you might have to license, design around, buy out the company, etc. It might slow down your commercialization advances (ie. steamrolling), but you can continue with your innovation and patent past the other guy and force a deal via cross-license etc. Patents don’t prevent innovation, just commercialization of what’s claimed for a limited period of time.
In the end, you seem to be anti-patent on all patents. Tsk, tsk. Yes, I have to tell you. You don’t know. Please vote with the herd and don’t take the lead on this one.

Justice Roberts: The typewriter is a bad example. It’s more like a pencil than a computer. Assuming Bilski’s method was novel and nonobvious and had a useful purpose, programming the computer to perform Bilski’s task gave that computer a new value or a new use, allowing it to perform actions never before performed by any device. The computer has new and useful functionality. I want GE to develop a handheld device (maybe the iphone) with a novel program that can predict heart attack or diagnosis an illness. It just a iphone, but is provided with software that provided it with new useful functionality. The typewriter is always just that, a typewriter.

Justice Breyer: “But then all we do is every example that I just gave…” Unclear if there’s a misprint in the transcript. Not clear what examples he is referring to. If the process is novel and nonobvious, programming a computer to perform that process should clearly be patentable. Correct? Not sure how far adrift you are here.

IMHO the Justices appeared hung up on novelty, nonobvious, enablement (breadth) and written description issues and failed to understand that the exclusive right provided by a patent is limited.

It is not easy or cheap to obtain a patent, it is not easy or cheap (and now much more risky) to license or enforce a patent. Many processes are hard to police and many patented inventions easily designed around with new technologies. Patents do not have nearly the power suggested by many of the Justices. In fact, recently patents have been eroded by recent decisions on DJ actions, permanent injunctions, damages, doctrine of equivalents, the patent term, patent publication, and more.

Generally, anything that is New/Novel (102), Nonobvious (103) and Useful (101) and also not within the exceptions (abstract idea, etc.) should be patentable. Remember, anything made by man under the Sun. That can still work if we can get the PTO to improve quality further and facilitate licensing deals so patents aren’t seen as a burden on commerce and can be more valuable for innovators.

But if want sometime tighter,exclude claimed processes that can be performed solely with mental steps.

But if you want something still tighter, require it be associated with technology or a machine or transforms tangible matter (including electrons, light, sound).

But, in the end, if you really just want to eliminate all patents by making so difficult to obtain and commercialize. Just do it and get it over with.

“CHIEF JUSTICE ROBERTS: Mr. Stewart, I thought I understood your argument up until the very last footnote in your brief. And you say this is not –simply the method isn’t patentable because it doesn’t involve a machine. But then you say but it might be if you use a computer to identify the parties that you are setting a price between and if you used a microprocessor to calculate the price. That’s like saying if you use a typewriter to type out the — the process then it is patentable. I — I — it — that takes away everything that you spent 53 pages establishing.”

“CHIEF JUSTICE ROBERTS: But if you look at your footnote, that involves the most tangential and insignificant use of a machine. And yet you say that might be enough to take something from patentability to not patentable.”

“CHIEF JUSTICE ROBERTS: So you think it’s a hard question. If you develop a process that says look to the historical averages of oil consumption over a certain period and divide it by 2, that process would not be patentable. But if you say use a calculator, then it — then it is?”

“JUSTICE STEVENS: I’m sorry. I must be awfully stup id. You say it would come out the same way. In the same way the court did or this way you argued?”

“JUSTICE STEVENS: I don’t understand why that isn’t just the application of a process, which –which is not itself patentable subject matter, to a particular machine that can use process —
JUSTICE KENNEDY: That’s — that’s a problem I have.”

“JUSTICE STEVENS: It’s not on a computer, which the only difference from the old computer is it’s using a new program. You can’t say that’s a new machine.”

Personally I love the last one. And to hear it delivered in person, and with such emphasis, in the highest court in the land was truly a priveledge. I mean, the delivery was perfect, it was as plainly stated as he might have said “The sky is blue”.

Then his fumbling rebutal to the statement:

“MR. STEWART: Well, but my — I think –first, I think you can because I think if you — if you improved the hardware of the computer in order to enable it to perform –”

Was absolutely classic. It was like a fine wine, delivered in an extremely nice environ.

I will probably remember this day for the rest of my life.

“JUSTICE STEVENS: But that patent didn’t require any change in the hardware, as I remember it correctly.”

Except that what the C.J. is talking about is “printed matter” which is one of the judicially recognized exceptions already. The difference is that when you type the algorithm, you still need the human to implement the steps. In the case of computer software, the instructions tell the machine what to do.